How to file a trademark through the Madrid Protocol

How to file a trademark through the Madrid Protocol

If you wish to gain protection overseas- one option is to file through the Madrid Protocol. One application, one language- several countries.

A list (as of April 2015) of signed up countries can be viewed here: http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

Before filing you must have a ‘home registration’- i.e. either an EU or UK application/registration. This must match your Madrid application. If you can it’s best to wait until your application has been fully registered. This is because if your home registration fails or encounters difficulties – i.e. an opposition it will negatively affect your trademark application in Madrid.

We can apply on your behalf. An application is made through the home registration office – i.e. UKIPO or OHIM. This office checks your application ( on receipt of a fee) and forwards it to the World Intellectual Property office, based in Geneva. International Registration will be registered if successful and details sent to each of the offices of the designated member countries/regions listed in the International Application. It is important to note that your trademark is now yet registered in your countries of choice! It will now be examined in each individual country. The designated countries usually 12- 18 months to object after it receives the examination. If problems do occur it is normal for an attorney in the country to be instructed and extra fees will be payable.

Costs

Fees vary depending on the country you wish to file your trademark in. So best to enquire for a tailor made quote. We generally charge £300.00+VAT per country but if you wish to file in a number of countries we can offer a reduction for multiple filings.

Jane@trademarkroom.com
www.trademarkroom.com